fastvdo llc v. dxg tech. usa, inc., et al., c.a. no. 11-797-rga (d. del. mar. 26, 2013)

7/29/2019 FastVDO LLC v. DXG Tech. USA, Inc., et al., C.A. No. 11-797-RGA (D. Del. Mar. 26, 2013)

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IN THE UNITED STATES DISTRICT COURTFOR THE DISTRICT OF DELAWARE

FASTVDO LLC,Plaintiff,

v.

DXG TECHNOLOGY USA, INC.,eta/.,

Defendants.

Civil Action No. 11-797-RGA

ORDER

The Court having considered the Parties' Joint Claim Construction Brief (D.I. 209),appendix (D.I. 210), and chart (D.I. 200), and oral argument (D.I. 215), IT IS HEREBYORDERED that, as used in U.S. Patent No. RE 40,081, the terms below are construed asfollows:

1. The Court notes the parties' agreed-upon construction of the term "biorthogonaltransform": "Transform that uses as a decomposition basis a complete set of basis vectors, suchthat every vector in the original basis has a 'dual' vector in a dual basis to which it isorthogonal."

2. The Court notes the parties' agreement that steps (a) through (f) of Claim 26 should beperformed in the order in which they are listed, but that within step (a), sub-steps (ii) through (iv)need not be performed in the order in which they are listed. (D.I. 209 at 83-84).

3. The Court further notes the parties' agreement at oral argument that the preambles ofthe asserted claims limit the claims' scope. (D.I. 215 at 37-38).

4. As noted at oral argument, the Court provides some constructions definitively, subjectto the Court's standard right to modify claim constructions; provides other constructions more


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tentatively; and holds some terms in abeyance. (D.I. 215 at 154-56). For the terms in the lattertwo categories, the Court welcomes additional submissions from the parties' experts as expertdiscovery progresses.

5. The following terms are construed definitively:a. "recursively"

The term "recursively" is construed to mean "according to a repeated procedure such thatthe results of a following step includes input from a previous step." Plaintif f offered thisconstruction at oral argument. (D.I. 215 at 44). This construction addresses the undisputed factthat a first step has no previous step from which to derive input. It also omits Defendants'proposed limitations that the following step be "defined" "according to a particular rule." Thefollowing step is not wholly defined by the previous step, but rather, includes input from othersources, e.g., the original image intensities. There is no support for Defendants' proposedlimitation "according to a particular rule" in Defendants' cited extrinsic evidence or the intrinsicevidence. (D.I. 209 at 26). Further, that phrase does not clarify the meaning of the claim term;to the contrary, it introduces vagueness as to what the rule may be. The words "according to" areadded only to correct the grammar when the construction is inserted into the claim.

b. "initial stage"The term "initial stage" is construed to mean "transform which effects the conversion of

the input data to the spatial frequency domain, e.g., discrete cosine transform." The first disputecenters on whether the conversion must be "full," and whether the input is converted "to thespatial frequency domain." There is no intrinsic or extrinsic evidence supporting the limitationthat the conversion be "full ." See (D.I. 209 at 30) (offering, without citation, that "this is what a

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DCT transform does"); (D.I. 215 at 63-64) (same). If, as Defendants argue, conversion is what aDCT does, then adding "full" as a modifier is confusing surplusage.

The second dispute addresses whether the conversion is limited to a conversion of theinput data to the spatial frequency domain. (D.I. 215 at 128-29). Plaintiff argues that becausethe specification discloses the initial stage may be the DCT or many other coding transforms, itmust include preprocessing. (D.I. 209 at 31-32). Defendants rightly point out that this last leapto preprocessing is not supported by the specification. Id at 32.

c. "MxMblockcoder" and "transform coder"The terms "MxM block coder" and "transform coder" are construed to require that "the

MxM block coder includes the initial stage and the transform coder." The parties agree that theMxM block coder is, at minimum, the initial stage. Claim 12 reads in relevant part:

a. processing the intensities in an MxM block coder . . .b. processing the result of the preceding step through a transform coder . . . ;c. transmitting or storing the output coefficients of said MxM block coder . . . ;e. processing the output coefficients in the decoder . . . using the inverse of thecoder ofsteps a. and h.

Col.12 11.5-25 (emphasis added). In other words, the MxM block coder processes the intensities;the transform coder adds transform coding; the resulting output coefficients are claimed as beingderived from the MxM block coder; and both coders are referred to as one, as "the coder" in step(e).

Defendants argue that because the transform coder in step (b) processes the result of theMxM block coder in step (a), the two must be separate and distinct. (D.I. 209 at 34). Thisargument fails in the face of the remainder of the claim, in which the output of the transform

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coder is claimed as originating with the MxM block coder, and in which the coders performingsteps a. and b. are collectively referred to as "the coder." Listing different steps of a methodclaim does not mean that the components performing those steps must be different; this isparticularly true in the face of the claim language here. The specification also describes thetransform as being "in" the block coder, contrary to Defendants' interpretation ofFigure 5.Compare Fig. 5 with colA 11.27-30.

d. "invertible linear transform" I "invertible forward linear transform"The terms "invertible linear transform" and "invertible forward linear transform" are

construed to mean "a lapped transform, that is, one where pixels from adjacent blocks areutilized in the calculation of transform coefficients for the working block, which implements thetransform coder." It appears the parties agree the claimed invertible linear transformencompasses the full scope of the invented transform, but disagree on that scope. The disputeconcerns whether the claimed transform must be lapped, or whether it may be a unitary,orthogonal, or biorthogonal transform with lapped transforms as a subset of those groups.

The specification shows the transform must be lapped. Plaintiff points to col.2 11.55-60 toargue that one embodiment is "a new transform which is simple and fast enough to replace thebare DCT," while another embodiment "provide[s] an image transform which has overlappingbasis functions," and therefore not all claimed transforms must be lapped. In fact, these are twoobjects of the same invention. See col.2 11.55-60. The patent repeatedly provides that the objectofthe invention is a lapped transform, referred to as LiftLT, that efficiently accomplishescompression without blocking artifacts. '081 Patent, [57] (providing in the Abstract, "Theinvention introduces a class ofmulti-band linear phase lapped biorthogonal transforms."); col.2

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1.55 - col.3 1.5 (Background of the Invention); col.3 11.7-10 (providing in the Summary of theInvention,"In the current invention, we use a family of lapped biorthogonal transforms."); col.3ll.15-18 (providing in the Summary of the Invention, "The LiftL T is a lapped biorthogonaltransform."); col.3 11.36-39 (providing in the Summary of the Invention, "Most generally, thecurrent invention is an apparatus . . . comprising a chain of lattices of lapped transforms."); col.4ll.48-52 ("In the current invention, which we call the Fast LiftLT, we apply lapped transforms.").Thus, the written description repeatedly and consistently defines the invention as comprising alapped transform, and does so in sections of the specification that are more likely to providestatements that describe the invention as a whole. Eon-Net LP v. Flagstar Bancorp, 653 F.3d1314, 1321 (Fed. Cir. 2011); C.R. Bard, Inc. v. US. Surgical Corp., 388 F.3d 858, 864 (Fed. Cir.2004). These statements about the invention are not limited to specific embodiments orexamples, but rather, describe and define the invention overall. Eon-Net LP, 653 F.3d at 1322.

The prosecution history also shows the invertible linear transform must be lapped.Plaintiff points to its own statements during reissue prosecution that the claimed transforms are"(potentially) overlapped." (D.I. 210, Ex. 19 at JA-000709). Plaintiff cannot rely on thosestatements during reissue prosecution to enlarge the claims beyond what the specificationdiscloses. See Lydall Thermal/Acoustical, Inc. v. Federal-Mogul Corp., 344 F. App'x 607, 614(Fed. Cir. 2009). In the prosecution history that led to the original issue, plaintiff stated, "[t]heinstant invention revolves around the use of lapped transforms." (D.I. 210, Ex. 12 at JA-000248).

The extrinsic evidence also shows lapping is essential. The specification and prosecutionhistory cite the Malvar reference in defining a lapped transform. Col.211.34-35; (D.I. 210, Ex. 12

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at JA-000248). Plaintiff argues Malvar discloses that all block transforms can be viewed aslapped transforms "with pT = [0 AT 0]" - in other words, that a block transform with anoverlapping factor equal to zero is still technically a lapped transform. See (D.I. 210, Ex. 10 atJA-000156). In response, Defendants show that Malvar defines all lapped transforms as actuallyoverlapping. ld at JA-000 155 ("[T]he basis functions from one block and one of its neighboringblocks would overlap, and this is the reason for the name lapped."). Defendants' proposedconstruction tracks the specification's definition of a lapped transform based on Malvar. Seecol.2 11.34-38. Further, the patent discloses the "simplest" embodiment has an overlapping factorequal to two -not zero. Col.5 ll.53-56.

In sum, the specification and prosecution history clearly and repeatedly provide theinvention comprises a lapped transform, the reference the specification relies upon to define alapped transform requires actual overlap, the resulting definition requires actual overlap, and thesimplest disclosed embodiment actually overlaps to a factor of two. The claimed invertible lineartransform must be a lapped transform.

e. "Representable as a cascade, using the steps"Defendants requests construction of the entire following phrase:

said transform being representable as a cascade, using the steps, in [apreselected] arbitrary order, of:

i) [(ii)] at least one 1 butterfly step,ii) [(iii)] at least one lifting step with rational complex coefficients, andiii) [(iv)] a t least one scaling factor.

Plaintiff asserts only the terms "butterfly step," " 1 butterfly step," and "lifting step" requireconstruction. The dispute centers on whether the steps need to be actually used, or whether, as inPlaintif fs proposed construction, the claim covers any operation that may be mathematically

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represented on a signal flow diagram as a sequence of these steps without actually using thesteps.

The Court construes the phrase "said transform being representable as a cascade, usingthe steps" to mean "said transform being representable as a cascade, and actually using thesteps." The terms "butterfly step," "1 butterfly step," and "lifting step" are construed below.The remainder of the phrase does not require construction.

The claim language itself provides the transform is both "representable as a cascade" and"us[es] the steps." A claim construction that gives meaning to all the terms ofthe claim ispreferred over one that does not do so. Merck & Co., Inc. v. Teva Pharms. USA, Inc., 395 F.3d1364, 1372 (Fed. Cir. 2005). Further, the specification repeatedly describes actually using thesesteps. See col.211.64-67; col.3 11.7-10; col.3 11.15-18; col.4ll.48-52. Plaintiffs attempt to readactual use out ofthe claim is unsupported by any intrinsic or extrinsic evidence. E.g., (D.I. 209at 59).

Defendants' proposed construction includes the additional limitation that the steps be"implemented with separate and distinct hardware or software circuits." However, Defendantsprovided no intrinsic or extrinsic support for this limitation. See (D.I. 209 at 56-58). It istherefore not adopted.

f. ''processing the output coefficients in the decoder into a reconstructed image"The term "processing the output coefficients in the decoder into a reconstructed image" is

given its plain and ordinary meaning. There is no support for Defendants' proposed limitationthat the "reconstructed image" be "the original digital image." To the contrary, the specificationdiscloses the claimed process results in imperfect reconstruction. Fig. 9; col.8ll.14-20, 66-67;

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col. 9 ll.1-4. The reissue prosecution history Defendants rely upon to argue for "perfectreconstruction" describes integer-to-integer mapping, not a perfect reconstruction of the originalimage upon completion ofthe entire process. (D.I. 210, Ex. 19, JA-000711-12). No furtherconstruction is necessary or helpful to the jury.

g. "dyadic"The term "dyadic" is construed to mean "a number whose denominator is a power of2,

i.e, a/2b, where b is a natural number (e.g. 1, 2, 3, etc.)." The dispute is whether element "b" maybe zero (0). The specification describes "dyadic rational values, that is, rational fractions having(preferably small) powers of two denominators." Col.6 11.39-48. While it may be that 0 is anatural number, the denominator should be a power of2, and if"b" is 0, the denominator is 1,such that under that construction any number is dyadic. This is improper and contrary to thepatent's definition.

h. "orthogonal transform"The term "orthogonal transform" is construed to mean "matrix that uses as a

decomposition basis a complete set of unit length basis vectors that are orthogonal to all otherbasis vectors." The parties agree their proposals are mathematically equivalent. (D.I. 209 at 80).Plaintiffs proffered construction tracks the language used in the specification and is thereforeadopted. See col.4 ll.28-36.

6. The following terms are construed tentatively:a. "butterfly step" I "1 butterfly step"

The terms "butterfly step" and "1 butterfly step" are construed to mean "a computationthat combines results of smaller discrete transforms with coefficients 1 and -1." As explained in

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section 5(e), supra, the claims require actual use ofthe steps, not mere representation asPlaintiffs construction would have it.

b. "lifting step"The term "lifting step" is construed to mean "a transform signal processing operation

which effects a linear transformation in accordance with a transform matrix[ : here one of a, b is 0." As explained in section 5( e), supra, the claims require actualuse of the steps, not mere representation as Plaintiffs construction would have it.

7. Construction of the terms "rational complex coefficients" and "unitary transform" isheld in abeyance.

( Lday ofMarch, 2013.

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fastvdo llc v. dxg tech. usa, inc., et al., c.a. no. 11-797-rga (d. del. mar. 26, 2013)

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